DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s response/application filed on 07/31/2025.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1, 4, 9, 11, 14, and 19 have been amended.
No claims have been canceled or added.
Claims 1-20 are currently pending and have been examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8, 9, 10, 11-18, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 1, 9, 10-17, 10, 18 of U.S. Patent No. 11928670 (reference patent), respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent include all the limitations of claims of the instant application.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 4, 5, 8, 9, 10, 11, 12, 14, 15, 18, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodell (US 20130275250), in view of Xiong (US 20120095956), further in view of Subbarayan (US 20160352867).
Regarding claim(s) 1 and 11, Rodell discloses:
a processor ([0015]); and
a memory coupled to the processor, the memory storing computer-executable instructions that, when executed by the processor ([0015]), configure the processor to:
present, via computing devices associated with a plurality of intended recipient entities of value storage tokens, a prompt for selection from a set of supported token providers associated with the value storage tokens; receive, from the plurality of intended recipient entities, indications of respective selections of a supported token provider; (By disclosing, “The person sending the gift designates a gift category within which the gift may be redeemed, and the recipient chooses a particular merchant from among the participating merchants at which to redeem the token. Preferably, selection of a merchant by the recipient occurs online by way of a mobile technology platform so that the recipient can designate the merchant at the time of redemption. The selection of a merchant by the recipient triggers a payment process to the selected merchant.” ([0018]));
responsive to receiving the indications, for each intended recipient entity: identify the selected token provider; and communicating to the selected token provider for requesting to obtain a digital representation of a value storage token associated with the selected supported token provider (By disclosing, “The person sending the gift designates a gift category within which the gift may be redeemed, and the recipient chooses a particular merchant from among the participating merchants at which to redeem the token. Preferably, selection of a merchant by the recipient occurs online by way of a mobile technology platform so that the recipient can designate the merchant at the time of redemption. The selection of a merchant by the recipient triggers a payment process to the selected merchant.” ([0018])); and
receive digital representations of the value storage tokens associated with the request ([0041], Fig. 11).
Rodell does not disclose:
select an application programming interface (API) from a plurality of candidate APIs associated with the selected supported token provider for use in acquiring a value storage token based on comparing:
parameters of a request to distribute the value storage tokens in bulk to the plurality of intended recipient entities, and
defined properties of the plurality of candidate APIs that are associated with the selected supported token provider;
establish a communication connection with a server system associated with the selected supported token provider through the selected API; and
generate calls to the selected API via the server system.
However, Subbarayan teaches:
select an application programming interface (API) from a plurality of candidate APIs associated with the selected supported token provider based on comparing: parameters of a request, and defined properties of the plurality of candidate APIs that are associated with the selected provider;
(By disclosing, “During the business process, the user may request for information while performing certain tasks. After the user enters a request for information, the suggestion engine 206 extracts the current attributes from the request and matches the current attributes with API input parameters. In one implementation, the suggestion engine 206 presents a list of available matching APIs 228 to the user for selection 230. ... Alternatively, the suggestion engine 206 may select the most relevant matching API 228 with the highest match score, and directly invoke the API based on attribute values 232 to generate a new report 234” ([0043] of Xiong)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Rodell that having a request for distribute value storage tokens in bulk to the plurality of intended recipient entities, in view of Xiong to include techniques of select an application programming interface (API) from a plurality of candidate APIs associated with the selected supported token provider based on comparing: parameters of a request, and defined properties of the plurality of candidate APIs that are associated with the selected provider; establish a communication connection with a server system associated with the selected provider through the selected API; and generate calls to the selected API via the server system. Doing so would result in an improved invention because this would leverage the advantages of using application programming interface (e.g. easy sharing, automation, efficiency, etc.).
And Subbarayan teaches:
establish a communication connection with a server system associated with the selected provider through the selected API; and generate calls to the selected API via the server system. (By disclosing, “In an alternative embodiment of the invention, upon identification of a matching API characteristics data definition at step 706, the proxy may at step 708 implement a preliminary authentication step involving comparison between(i) request or message parameter information extracted at step 704 against (ii) corresponding parameter information specified within the matching API characteristics data definition identified at step 706. Only if the compared parameter information matches, would the proxy route the client message or request to a target API at an API server within the server backend” ([0068-[0079] of Subbarayan)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Rodell and Xiong that select an application programming interface (API) from a plurality of candidate APIs, in view of Subbarayan to include techniques of establish a communication connection with a server system associated with the selected provider through the selected API; and generate calls to the selected API via the server system. Doing so would result in an improved invention because this would allow smooth flow of data between disparate systems.
Regarding claim(s) 2 and 12, Rodell discloses:
deliver the digital representations of the value storage tokens associated with the request to at least one of a token sender entity or the plurality of intended recipient entities ([0041], Fig. 11).
Regarding claim(s) 4 and 14, Rodell discloses:
establish a communication connection with a server system associated with the selected supported token provider for the selected supported token provider (By disclosing, “The person sending the gift designates a gift category within which the gift may be redeemed, and the recipient chooses a particular merchant from among the participating merchants at which to redeem the token. Preferably, selection of a merchant by the recipient occurs online by way of a mobile technology platform so that the recipient can designate the merchant at the time of redemption. The selection of a merchant by the recipient triggers a payment process to the selected merchant.” ([0018])).
Rodell does not disclose, but Subbarayan teaches:
establish the communication connection through the selected API (By disclosing, “In an alternative embodiment of the invention, upon identification of a matching API characteristics data definition at step 706, the proxy may at step 708 implement a preliminary authentication step involving comparison between(i) request or message parameter information extracted at step 704 against (ii) corresponding parameter information specified within the matching API characteristics data definition identified at step 706. Only if the compared parameter information matches, would the proxy route the client message or request to a target API at an API server within the server backend” ([0068]-[0079] of Subbarayan)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Rodell and Xiong, in view of Subbarayan to include techniques of establish the communication connection through the identified API. Doing so would result in an improved invention because this would leverage the advantages of using application programming interface (e.g. easy sharing, automation, efficiency, etc.).
.
Regarding claim(s) 5 and 15, Rodell discloses:
wherein the instructions, when executed, further configure the processor to generate deliverable products associated with the value storage tokens by performing one or more of:
obtaining token provider-specific graphics data associated with the at least one token provider (By disclosing, the name of the token provider is identified on the graphic data (Figs. 11-12));
generating a document that contains formatted representations of at least a plurality of the value storage tokens associated with the request; and
generating a plurality of documents that contain formatted representations of the value storage tokens associated with the request, each of the plurality of documents corresponding to a different denomination specified in the request parameters.
Regarding claim(s) 8 and 18, Rodell discloses:
wherein the request to distribute the value storage tokens is received through an interface associated with a bulk fulfillment server and wherein the interface is configured to prompt for a selection from a set of value storage types, the value storage types including physical gift cards and digital tokens (By disclosing, “The browsing toolbar 441 also includes an expandable list of vendors 445 in the currently selected city which accept tokens.” ([0046], [0003]-[0004], Figs. 31-32).
Regarding claim(s) 9 and 19, Rodell does not disclose, but Xiong teaches:
wherein the API is selected based on comparing request parameters of the request and properties of candidate APIs associated with the selected provider. (By disclosing, “During the business process, the user may request for information while performing certain tasks. After the user enters a request for information, the suggestion engine 206 extracts the current attributes from the request and matches the current attributes with API input parameters. In one implementation, the suggestion engine 206 presents a list of available matching APIs 228 to the user for selection 230. ... Alternatively, the suggestion engine 206 may select the most relevant matching API 228 with the highest match score, and directly invoke the API based on attribute values 232 to generate a new report 234” ([0043] of Xiong)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Rodell and Subbarayan that having a request for distribute value storage tokens in bulk to the plurality of intended recipient entities, in view of Xiong to include techniques of wherein the API is selected based on comparing request parameters of the request and properties of candidate APIs associated with the selected provider. Doing so would result in an improved invention because this would leverage the advantages of using application programming interface (e.g. easy sharing, automation, efficiency, etc.).
Regarding claim(s) 10 and 20, Rodell discloses:
wherein the digital representation of each of the value storage tokens is delivered in real-time in response to detecting a transaction associated with the request (By disclosing, “After the purchaser selects a business, the service delivers the gift electronically to the recipient's email account or Facebook wall, and sends a predetermined amount of money to the recipient via Paypal.” ([0004])).
Claim(s) 3, 6, 7, 13, 16, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodell (US 20130275250), in view of Xiong (US 20120095956), further in view of Subbarayan (US 20160352867), and Smith (US 20130159084).
Regarding claim(s) 3 and 13, the combination of Rodell, Xiong and Subbarayan does not disclose, but Smith teaches:
wherein the request is received through a white-labelled user interface associated with at least one token provider provided by a fulfillment system that manages orders for a plurality of token providers. (Fig. 2-Fig. 7, [0078]-[0079] of Smith).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Rodell, Xiong and Subbarayan, in view of Smith to include techniques of wherein the request is received through a white-labelled user interface associated with at least one token provider provided by a fulfillment system that manages orders for a plurality of token providers. Doing so would result in an improved invention because this would all the user to retrieve order information associated with the plurality of token providers directly through the fulfillment system.
Regarding claim(s) 6 and 16, the combination of Rodell, Xiong and Subbarayan does not disclose, but Smith teaches:
wherein the instructions, when executed, further configure the processor to store, in the memory, the digital representations of the value storage tokens in association with the request for later retrieval or delivery(By disclosing, “The method may also include the steps of allowing access to a plurality of promotional codes stored within the loyalty award website, and allowing redemption of the award for at least one of the plurality of promotional codes through the loyalty award website.” ([0012] of Smith)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Rodell, Xiong and Subbarayan, in view of Smith to include techniques of wherein the instructions, when executed, further configure the processor to store, in the memory, the digital representations of the value storage tokens in association with the request for later retrieval or delivery. Doing so would result in an improved invention because this would allow the users to retrieve the digital representations directly through the fulfillment system, thus improving the user convenience.
Regarding claim(s) 7 and 17, the combination of Rodell, Xiong and Subbarayan does not disclose, but Smith teaches:
monitor distribution activity associated with the stored digital representations of the value storage tokens. (By disclosing, “the user may administer the entire loyalty and reward program from predetermined webpages of the loyalty and reward program, an example of such is shown in Fig. 12” ([0098] and Fig. 12 of Smith)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Rodell, Xiong and Subbarayan, in view of Smith to include techniques of monitoring distribution activity associated with the stored digital representations of the value storage tokens. Doing so would result in an improved invention because this would allow the user to administer the digital representations directly through the fulfillment system, thus improving the user convenience.
Response to Arguments
Applicant’s arguments with regard to the Double Patenting rejection have been considered but are not persuasive. The applicant argues that the terminal disclaimer has been filed. However, there is no terminal disclaimer recorded in the system. According, the Double Patenting rejection will be maintained.
Applicant’s arguments with regard to the 35 U.S.C. § 103 rejection have been considered but are moot in view of new grounds of rejection initiated by applicant’s amendment to the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20160005028 to Mayblum for disclosing creating gift messages for sending to individuals via an existing messaging infrastructure.
WO 2014113608 to Erez for disclosing a gift transaction system.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUAN ZHANG whose telephone number is (571)272-4642. The examiner can normally be reached Mon - Fri 10 AM-5 PM.
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/DUAN ZHANG/Primary Examiner, Art Unit 3699